THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Hearing:
February 23, 2007
Mailed:
November 21, 2007
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Hormel Foods Corporation and Hormel Foods, LLC
v.
Spam Arrest, LLC
_____
Cancellation No.92042134
_____
Allen W. Hinderaker and William D. Shultz of Merchant &
Gould P.C. for Hormel Foods Corporation and Hormel Foods,
LLC.
Derek A. Newman and Randall Moeller of Newman & Newman,
Attorneys at Law, LLP for Spam Arrest, LLC.
_____
Before Sams, Seeherman and Rogers, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Hormel Foods Corporation and Hormel Foods, LLC
(hereafter collectively referred to as “petitioner”) have
petitioned to cancel the registration of Spam Arrest, LLC
for SPAM ARREST, with the word SPAM disclaimed, for
“computer software, namely software designed to eliminate
Cancellation No. 92042134
unsolicited commercial electronic mail.”1
Petitioner has
brought this action on the grounds of likelihood of
confusion and dilution.2
Specifically, petitioner has
alleged that petitioner is the owner of the registered
trademark SPAM and a family of SPAM trademarks; that
petitioner has used the trademark SPAM for more than sixty
years for a canned meat product and has expanded its use of
the mark over the years to include a variety of goods and
services; that petitioner has registered SPAM for items such
as processed meats, wearing apparel, hand kitchen slicers,
jewelry, playing cards, pens, mugs, tennis balls and toys
and the service of participating in automobile races; that
petitioner owns a SPAM family of marks; that petitioner uses
SPAM with a variety of goods and services including clocks,
knives, recipe books, mouse pads and entertainment
celebrations; that petitioner has used SPAM and its SPAM
family of marks since prior to applicant’s claimed date of
first use of August 24, 2002; that petitioner’s SPAM mark is
famous; that respondent’s SPAM ARREST mark so resembles
petitioner’s SPAM mark and its family of SPAM marks as to be
1
Registration No. 2701493, issued March 25, 2003, based on an
intent-to-use application that was filed on November 27, 2001.
2
The petition also recited an alternative ground of mere
descriptiveness or genericness, but petitioner stated in its
trial brief, at footnote 1, that it “is not advancing the mere
descriptiveness claim.” Although petitioner also states that it
“chooses to prosecute this cancellation on the grounds of likely
confusion and likely dilution without prejudice to its claim of
mere descriptiveness,” we treat petitioner’s failure to prosecute
this ground as a waiver of it.
2
Cancellation No. 92042134
likely, when applied to respondent’s goods, to cause
confusion or mistake or to deceive; and that respondent’s
SPAM ARREST mark dilutes the distinctive quality of
petitioner’s previously used and registered mark SPAM and
its family of SPAM marks.
In answer to the petition, respondent has admitted the
averments of paragraphs 3 and 6 of the petition for
cancellation, which read as follows:
3. Hormel Foods is also the owner of
trademark registrations for marks that
are derivative of the SPAM trademark,
making up the SPAM family of marks.
These marks include SPAMARAMA for
entertainment services, Registration No.
2059462; SPAMBURGER for processed meat,
Registration No. 1819104; SPAM JAM for
entertainment services in the nature of
an annual festival featuring a variety
of activities, namely exhibitions,
cooking and other contests, and music,
Registration No. 2561571; and SPAMTASTIC
for mail order catalog services in the
field of clothing, footwear, headwear,
jewelry, home, kitchen, sporting goods,
paper goods and printed matter, and
children’s toys, Registration No.
2478066;
6. Applicant’s SPAM ARREST mark is
composed of Petitioners’ entire SPAM
mark with the term “arrest” immediately
following Petitioners’ mark.
Respondent has also admitted that petitioner is the owner
“of the registered trademark SPAM and the family of SPAM
trademarks, that the United States Registrations include
Nos. 775187, 1338031, 1415969, 1298745, 1505620, 1716102,
1985602, 2057484, 2373313 and 2639240”; and that petitioner
3
Cancellation No. 92042134
has a website at www.spam.com.
Respondent has otherwise
denied the salient allegations of the petition for
cancellation.
Respondent has also asserted as affirmative
defenses amplifications of its denial of likelihood of
confusion; that “spam,” when used in connection with
unsolicited commercial email, is generic; and acquiescence
and estoppel.
Specifically, respondent alleges that
petitioner has acquiesced in respondent’s and others’ use of
the term “spam” with respect to unsolicited commercial email
by posting statements on its website and through its
representatives to the effect that petitioner does not
object to use of the term “spam” to describe unsolicited
commercial email; that respondent has detrimentally relied
on such statements; and that petitioner should be equitably
estopped from asserting trademark or service mark rights in
the term “spam” with respect to unsolicited commercial
emails and any related products and services.
Procedural Issues
In its trial brief petitioner asserts that respondent’s
affirmative defenses should be stricken.
However, the basis
of petitioner’s position with respect to respondent’s
defense of acquiescence and estoppel is that the defense
should fail for lack of proof, not that the defense should
be stricken because it is not a valid defense.
4
The Board
Cancellation No. 92042134
does not strike an affirmative defense solely for lack of
sufficient support.
As for the affirmative defense that SPAM is a generic
term, petitioner argues that a pleading of genericness is
merely a pleading that third parties use a term, and that
third-party use does not establish an affirmative defense.3
However, respondent is not asserting that others use SPAM as
a mark, but that the term is generic.
Thus, respondent is
not asserting that petitioner has failed to object to third
parties’ use of marks containing the word SPAM, which might
be viewed as an assertion that petitioner’s mark is entitled
to a limited scope of protection.
Nor is respondent
asserting that petitioner’s mark is generic, which of course
would have to be asserted as a counterclaim, only that
“spam” has a generic meaning.
The evidence petitioner
itself submitted, as well as the testimony of its own
witnesses, shows that “spam” means unsolicited commercial
email, so it would appear that petitioner is objecting to
the form, rather than the substance, of respondent’s
defense.
Even if this defense does not fit into the
3
Petitioner relies on three non-precedential Board decisions.
Prior to January 23, 2007, the Board’s policy had been that
decisions which were not designated as “citable as precedent”
were not citable authority. See General Mills Inc. v. Health
Valley Foods, 24 USPQ2d 1270, 1275 n. 9 (TTAB 1992). On January
23, 2007, a notice in the Official Gazette stated that henceforth
the Board would permit citation to any TTAB disposition, although
a decision designated as not precedential is not binding upon the
TTAB.
5
Cancellation No. 92042134
category of a true affirmative defense, it serves to put
petitioner on notice as to why respondent believes there is
no likelihood of confusion and dilution, and is thus an
amplification of respondent’s denial of the claims.
The
Board does not strike such amplifications.
Accordingly, we do not strike either of these asserted
defenses.
With respect to the pleaded ground of dilution, we note
that petitioner’s claim fails to assert that petitioner’s
mark became famous prior to the filing date of the
application which subsequently resulted in issuance of the
registration that is the subject of this proceeding.
However, because respondent has not raised an objection to
this omission, but has substantively argued the ground of
dilution, and because petitioner has submitted evidence as
to the fame of its mark prior to respondent’s filing date,
we deem the pleadings to be amended to include such an
allegation.
See Fed. R. Civ. Proc. 15(b).
In addition,
petitioner did not plead ownership of Registration No.
3022539 for SPAM for “downloadable software, namely screen
savers,” because this registration had not issued at the
time the petition for cancellation was filed.
However,
petitioner made the application of record with its notice of
reliance filed August 29, 2005, and submitted a printout of
6
Cancellation No. 92042134
information for the registration taken from the USPTO TARR4
database with its supplemental notice of reliance filed on
December 14, 2005.
Respondent has treated this registration
as being of record, and has discussed the effect of
petitioner’s use of the mark for such goods.
Accordingly,
we deem the petition for cancellation to be amended pursuant
to Fed. R. Civ. Proc. 15(b) to include this registration.
As noted above, petitioner, in submitting a copy of
Registration No. 3022539, did not submit a copy of the
registration prepared and issued by the USPTO showing
current status of and current title to the registration, but
submitted a printout from the TARR database.
Although Rule
2.122(d)(1) of the Trademark Rules was amended, effective
August 31, 2007, to allow a plaintiff to make its
registrations of record by submitting a “current printout of
information from the electronic database records of the
USPTO showing the current status and title of the
registration,” trial and briefing in this proceeding was
completed prior to that date.
Accordingly, the amended rule
is not applicable, since it does not have retroactive
effect.
However, respondent has treated not only this
registration, but all the materials submitted by petitioner
as being of record (“depositions and exhibits described by
4
TARR stands for Trademark Applications and Registrations
Retrieval.
7
Cancellation No. 92042134
Petitioners Hormel Foods Corporation and Hormel Foods, LLC…
in Petitioners’ Trial Brief ... at 9-10”).
brief, p. 10.
Respondent’s
These pages of petitioner’s trial brief list
all of the materials submitted with petitioner’s notices of
reliance, including materials that would normally not be
considered acceptable for submission by notice of reliance.5
As a result, we deem all of the materials submitted by
petitioner to be stipulated into the record.
During the course of the testimony depositions each
party raised various objections and/or motions to strike the
testimony and exhibits of the other’s witnesses.
5
Because
It appears that petitioner treated its notice of reliance as a
vehicle for advising the Board and respondent as to all evidence
on which it would rely in support of its case. For example,
petitioner stated at paragraph 27 that it had taken or planned to
take the testimony depositions of several individuals, but did
not submit them with the notice. Indeed, the notice of reliance
was signed and filed on August 29, 2005, although the testimony
deposition of Ellen Kohl did not take place until August 30,
2005. Petitioner also submitted a copy of the file of
respondent’s registration, although such material is
automatically of record pursuant to Trademark Rule 2.122(b).
Many of the exhibits petitioner submitted with its notice of
reliance were duplicate copies of exhibits that were made of
record during the various testimony depositions, with petitioner
explaining that “Exhibits 1-212 were the subject of Petitioner’s
testimony depositions. The exhibits set forth in this Notice of
Reliance are offered for the independent basis set forth in each
paragraph.” p. 1, n. 1. However, once an exhibit is properly
made of record, it may be referred to or relied on by any party
to a proceeding for any purpose without further action, and it
was therefore unnecessary for petitioner to submit duplicate
filings.
In addition, we note that petitioner sometimes marked the same
exhibits with more than one number, essentially introducing a
single exhibit twice during the course of two depositions but
with different numbers (although in other depositions, previously
marked exhibits were referred to by the number under which they
were originally introduced). The Board frowns on the submission
of duplicate exhibits and petitioner has wrongly burdened the
Board by not taking care to avoid duplications in the record.
8
Cancellation No. 92042134
these objections were not maintained in the parties’ trial
briefs (with the exception of two motions to strike which
the Board decided in its order of January 12, 20076), the
objections have been deemed to be waived.
However, the
Board has still considered the probative value of the
testimony and exhibits in making its decision herein.
For
example, although books and newspaper articles are of
record, they are not competent to prove the truth of the
statements made in those publications.
See authorities
collected in Section 704.08 of the Trademark Trial and
Appeal Board Manual of Procedure (TBMP) (2d ed. rev. 2004).
Thus, we have considered these materials only to show public
exposure to the statements, unless witnesses have testified
as to the truth of particular statements.
We have also given very limited probative value to the
testimony of Ivan Ross, an expert witness who gave his
opinion as to the fame of the mark SPAM.
Much of the basis
for his opinion is not of record herein.
For example, he
testified that he relied on the declaration of Nicholas
Meyer (test. p. 22) in forming his opinion.
Although Dr.
Ross identified the declaration as an exhibit to his
6
The parties cross-moved to strike or exclude testimony and
exhibits relative to a survey conducted by petitioner and the
responsive testimony and report offered by respondent. The Board
denied the motions, but stated that the probative value to be
accorded to such evidence would be considered at final hearing.
We do so infra.
9
Cancellation No. 92042134
testimony, no one in a position to know the facts recited in
the declaration ever testified during the testimony period
that the statements in the declaration were true and
continued to be true.
Compare, Levi Strauss & Co. v. R.
Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB
1993)(declaration of witness submitted in connection with
summary judgment motion was part of record for trial where
witness identified and attested to accuracy of it during
testimony period).
More importantly, although Dr. Ross
stated, at p. 20 of his deposition, that he was not
“expressing a legal opinion,” it is clear that his opinion
as to the fame of petitioner’s mark was in the context of
trademark law.
He referenced trademark cases and trademark
treatises, and stated that he was adopting “the concept or
the construct of fame as I understand it being utilized in
trademark parlance.”
The determination of whether a mark is
famous in terms of trademark law and concepts is something
that is within the province of the courts and the Board to
decide, and we decline to adopt or give probative weight to
what is, in effect, a legal conclusion by an “expert” on
such an issue.
The Record
The record consists of the testimony and exhibits and
other material listed at pages 9 and 10 of petitioner’s
10
Cancellation No. 92042134
trial brief and pages 9 and 10 of respondent’s trial brief.
In particular, it includes the pleadings; the file of the
registration sought to be cancelled; the testimony
depositions, with exhibits, of opposer’s witnesses George
Mantis, Shawn Radford, Ivan Ross, Gregory Carpenter,
Nicholas Meyer, Jeffrey Grev, Lance Pogones, Ellen Kohl and
Kevin Jones (including Mr. Jones’s rebuttal testimony
deposition), and of respondent’s witnesses Brian Cartmell
and Lea Knight; printed publications; third-party
registrations and third-party application files; each
party’s responses to the other’s discovery requests,
including responses made by the parties in an opposition
brought by petitioner against respondent’s application for
SPAM ARREST for services;7 transcripts of discovery
depositions; and petitioner’s registrations8 for SPAM for
deviled luncheon meat spread;9 t-shirts;10 caps;11 wearing
apparel;12 kitchen hand tools, namely slicers;13 processed
7
This opposition proceeding, No. 91153159, was suspended on
September 30, 2003, upon stipulated motion of the parties,
pending a determination in the present cancellation proceeding.
8
These registrations are all owned by petitioner Hormel Foods
LLC.
9
Registration No. 755187, issued August 20, 1963; Section 8 &
15 affidavits accepted and acknowledged; renewed twice.
10
Registration No. 1338031, issued May 28, 1985; Section 8 & 15
affidavits accepted and acknowledged; renewed.
11
Registration No. 1415969, issued November 14, 1986; Section 8
& 15 affidavits accepted and acknowledged; renewed.
12
Registration No. 1498745, issued August 2, 1988; Section 8 &
15 affidavits accepted and acknowledged.
13
Registration No. 1505620, issued September 27, 1988; Section 8
& 15 affidavits accepted and acknowledged.
11
Cancellation No. 92042134
meat;14 magnets, jewelry, namely watch, necklace, earrings
and tie tack, playing cards, pencils, pens, and note cube,
mug and insulated beverage containers;15 entertainment
services, namely participating in automobile races;16
poultry;17 retail gift shop services and educational and
entertainment services, namely providing museum services
featuring exhibits, memorabilia, and various multimedia
presentations;18 and downloadable software, namely screen
savers;19 and for SPAMBURGER for processed meat;20 SPAMARAMA
for entertainment services in the nature of an annual
festival featuring a variety of activities, namely,
14
Registration No. 1716102, issued September 15, 1992; Section 8
& 15 affidavits accepted and acknowledged; renewed.
15
Registration No. 1985602, issued July 9, 1996; Section 8 & 15
affidavits accepted and acknowledged; renewed. The status and
title copy was furnished by the USPTO in June 2005, during
petitioner’s testimony period and prior to the renewal of the
registration. In accordance with Board policy, we have confirmed
that Office records reflect the renewal of the registration. See
TBMP §704.03(b)(1)(A) (2d ed. rev. 2004) and cases cited at
footnote 142. In checking the status of the registration, we
have also confirmed that Section 8 & 15 affidavits were accepted
and acknowledged, respectively, although this information
inexplicably does not appear on the copy of the registration
prepared by the USPTO.
16
Registration No. 2057484, issued April 29, 1997; Section 8 &
15 affidavits accepted and acknowledged; renewed. The status and
title copy was furnished by the USPTO in June 2005, during
petitioner’s testimony period and prior to the renewal of the
registration. We have confirmed that Office records reflect the
renewal of the registration.
17
Registration No. 2373313, issued August 1, 2000; Section 8 &
15 affidavits accepted and acknowledged.
18
Registration No. 2639240, issued October 22, 2002.
19
Registration No. 3022539, issued December 6, 2005.
20
Registration No. 1819104, issued February 1, 1994; Section 8 &
15 affidavits accepted and acknowledged; renewed.
12
Cancellation No. 92042134
exhibitions, cooking and other contests, and music;21
SPAMTASTIC for mail order catalog services in the field of
clothing, footwear, headwear, jewelry, home, kitchen,
sporting goods, paper goods and printed matter, and
children's toys;22 and SPAM JAM for entertainment services
in the nature of an annual festival featuring a variety of
activities, namely exhibitions, cooking and other contests,
and music.23
It is noted that the discovery depositions of Nicholas
Meyer and Kevin Jones that were submitted by respondent bear
a statement that they are “confidential,” although they were
not in fact filed under seal.
The Board has treated these
depositions as being confidential for the present, but
because it is the general policy of the Board that all
papers in proceedings be public, the parties are allowed
thirty days in which to submit redacted versions of these
depositions, failing which they will be treated as part of
the public record.
We also note that portions of the
21
Registration No. 2059462, issued May 6, 1997; Section 8 & 15
affidavits accepted and acknowledged; renewed. The status and
title copy was furnished by the USPTO in June 2005, during
petitioner’s testimony period and prior to the renewal of the
registration. We have confirmed that Office records reflect the
renewal of the registration.
22
Registration No. 2478066, issued August 14, 2001; Section 8 &
15 affidavits accepted and acknowledged. The status and title
copy was furnished by the USPTO in June 2005, during petitioner’s
testimony period and prior to the filing of the Section 8 and 15
affidavits. We have confirmed that Office records reflect the
filing of these affidavits.
23
Registration No. 2561571, issued April 16, 2002.
13
Cancellation No. 92042134
testimony depositions and certain exhibits identified
therein were submitted under seal, although some of the
information contained in the so-called confidential
materials could not, in fact, reasonably be characterized as
confidential.
For example, in the deposition of Nicholas
Meyer the number of cans of SPAM meat that have been sold
has been redacted, although there is a public “counter”
displaying this number at the Spam Museum.
To the extent
that information that has been marked as “confidential” is
necessary for us to discuss in our opinion, we have done so,
although we have tried to be sensitive about not revealing
truly confidential information.
However, the survey
conducted by George Mantis, and which was submitted under
seal, is the basis for petitioner’s claim of dilution, and
it is the evidence on which much of the testimony of
petitioner’s expert witnesses is based.
Therefore, any
discussion of the probative value of this survey necessarily
requires a discussion of some of the information in the
survey.
Similarly, an alleged incident of actual confusion
is based on a “verbatim” report, Exhibit 193, which
petitioner has marked as confidential.
Again, we cannot
discuss the probative value of this evidence without
discussing it herein, and therefore we have done so.
The parties have fully briefed the case, and both were
represented at an oral hearing before the Board.
14
Cancellation No. 92042134
Facts
Petitioner Hormel Foods LLC is a wholly-owned
subsidiary of petitioner Hormel Foods Corp. and is the owner
of petitioner’s intellectual property, which it licenses
back to Hormel Foods Corp.
Petitioner adopted the trademark
SPAM for a canned luncheon meat product which is made from
pork and ham, and the name is derived from “SPiced hAM.”
Since 1937, when the product was introduced, 6.3 billion
cans of SPAM luncheon meat have been produced.
During World
War 2 SPAM luncheon meat was provided to both U.S. and
Allied soldiers, and to civilians in Europe, and many famous
people, such as President Eisenhower, Prime Minister
Margaret Thatcher and Premier Nikita Khrushchev, have
written about their experiences regarding SPAM luncheon meat
during that period.
Petitioner’s SPAM luncheon meat is sold in virtually
every retail outlet that carries food, including grocery
stores, mass merchandising stores such as Wal-Mart and
Target, club stores such as Costco, and convenience stores.
Petitioner promotes its SPAM meat product in various
ways.
In addition to television, radio, print and billboard
advertising, it sponsors athletes or athletic contests
(currently it sponsors a race car driver named Jesse Smith);
it sends SPAMMOBILES, trucks built to resemble a can of
SPAM, throughout the country, where they host block parties,
15
Cancellation No. 92042134
or appear at grocery stores or sporting events and
distribute SPAMPLES (samples of SPAM product); it does instore demonstrations; distributes coupons; sponsors recipe
contests at local and state fairs and national contests for
recipes using SPAM meat (one winner, who created a SPAM
cheesecake recipe, appeared on the “Tonight Show”); has
sponsored festivals called SPAM JAM and SPAMARAMA; and
operates the SPAM Museum in Austin, MN, which town has the
nickname of SPAMTown USA, a nickname that appears on postal
marks used on mail sent from Austin.
In addition, in 1998
petitioner started the SPAM Fan Club, which currently
operates on-line and can be joined without charge.
Two cans of SPAM, an original can and the modern
version, are on display at the Smithsonian Museum of
American History in Washington, DC, and a can of SPAM was
part of a Library of Congress “Heritage” exhibit in which
various household items were featured.
Petitioner’s SPAM
trademark or product also has received mentions on various
television programs and in movies.
The opening of the SPAM
Museum was featured on the “Today Show” in June 2002; a
segment on the “David Letterman Show” had a product called
“SPAM on a rope”; “Northern Exposure” had an astronaut
saying that he was considered “SPAM in the can”; a quiz on
the Rosie O’Donnell show called “Pam [Anderson] or SPAM”
asked “What is more popular in Hawaii than anywhere else in
16
Cancellation No. 92042134
the world?”; and an episode of “MASH” showed a SPAM lamb.
Petitioner has also engaged in co-promotion with the
Broadway musical “Spamalot.”
The trademark SPAM is included
in a lyric in the show, and a large can of SPAM appears at
that point.
In connection with the opening, petitioner
created a special edition “Honey Grail” can of SPAM, which
has characters from Spamalot appearing on the labeling.
Petitioner’s sales and advertising figures, as well as
brand awareness studies, have been submitted under seal.
However, because respondent has admitted the fame of the
SPAM mark in terms of the issue of likelihood of confusion,
see applicant’s response to opposer’s request for admission
No. 33 in Opp. No. 91153159, there is no need for us to
refer to these figures, and we will say only that they are
extremely large.
In 1991 petitioner started selling collateral products-merchandise bearing SPAM trademarks.
It began with T-
shirts and flip flops, but then expanded to a multitude of
products, including various apparel, kitchen items, jewelry
and office supplies.
The 2000 SPAMTASTIC gift catalog
displays such items as caps, shirts, flannel pants, ties,
backpacks, sunglasses, tennis balls, clocks, cutting boards,
mugs, paper clips, letter openers, mouse pads, light switch
plates, Swiss army knives, snowdomes, toy banks, balloons
and golf umbrellas with the mark SPAM or representations of
17
Cancellation No. 92042134
the SPAM can on them, as well as a SPAM CAM disposable
camera and earrings in the shape of a SPAM can. These
products are available for order on-line or through
petitioner’s toll free telephone number or SPAMTASTIC
catalog, or at the gift shop of the SPAM Museum.
The
operator of the SPAM gift shop testified that he sometimes
sells items to stores for resale, but there is no
information as the extent of these re-sales or the
particular items sold.
In addition, petitioner has licensed the SPAM mark for
use on lottery tickets, including tickets sold in South
Dakota and Minnesota, and on slot machines.
Respondent was founded in September 2001.
Its product
and services are offered under the mark SPAM ARREST, and
their purpose is to help their customers avoid spam.
Emails
from known addressees are permitted to go directly into the
customer’s inbox.
Unrecognized addressees are asked to
verify that they are an actual person, rather than a
computer that is sending bulk commercial emails.
Verified
messages then go into the customer’s inbox, while unverified
messages go into another box, where the customer can review
them if he or she wishes.
Messages that remain in this
latter box are automatically deleted after seven days.
There is some question as to when respondent first used
its mark in connection with its software.
18
Respondent’s
Cancellation No. 92042134
founder testified that it first used its mark in May 2002,
when its first customer tried its services, and that its
first sale occurred in August 2002.
However, we need not
concern ourselves with the exact date in 2002 on which
respondent used its mark for software because it is clear
that it is the filing date of respondent’s intent-to-use
application, November 27, 2001, that is the earliest date on
which respondent can rely for priority purposes.
Respondent offers its software and its services through
the Internet, both directly through its website and through
affiliates--companies with whom it has a contractual
relationship--who offer it through their websites.
Respondent publicizes its goods and services through various
types of Internet advertising, including banner ads on the
websites of others; it has also done some radio advertising
on the Howard Stern show, and had prepared a television
commercial which was, at the time of its CEO’s testimony in
2005, about to be shown on the Discovery Channel.
Its
primary marketing is through the challenge response that is
part of respondent’s spam-filtering service; that is, people
are directed to respondent’s website in order to verify that
their email message is not spam, and in this way they are
exposed to respondent’s website and its product/services.
Respondent and its SPAM ARREST product have also received
mentions in various print media and website articles.
19
Cancellation No. 92042134
In 2003 respondent’s sales were in the $200,000 range;
at the time of Mr. Cartmell’s testimony deposition in
October 2005 respondent had spent between $400,000 and
$500,000 for marketing.
The word “spam” is a recognized generic term for
unsolicited commercial email.
There are various stories
about how this term came to be adopted, including that it
was a term used on computer game-playing sites to describe
different types of abusive behavior, and that it is an
acronym for “sending public announcement messages.”
However, the widely-reported origin, which appears in
Merriam-Webster’s Collegiate Dictionary, 11th ed. © 2003, is
that it is derived from “a skit on the British television
series Monty Python’s Flying Circus in which chanting of the
word Spam overrides the other dialogue.”
Whatever its
origin, “spam” is well recognized today as the generic term
for such email.
The definition of “spam” in the Merriam-
Webster dictionary is “unsolicited usu. commercial e-mail
sent to a large number of addresses.”
See also, definition
in Random House Webster’s College Dictionary © 2001: “a
disruptive, esp. commercial message posted on a computer
network or sent as e-mail.”
Numerous media stories use it
as the generic term, and even federal legislation is called
the CANSPAM Act, CANSPAM being an acronym for the awkwardly
named “Controlling the Assault of Non-Solicited Pornography
20
Cancellation No. 92042134
and Marketing Act of 2003,” which was obviously devised in
order to result in the acronym CANSPAM.
Analysis
Standing
Petitioner has demonstrated its standing by virtue of
the registrations it has made of record, and its evidence of
common law rights in the mark SPAM, thus showing it is not a
mere intermeddler.
See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
Priority
Because this is a cancellation proceeding, and both
parties own registrations, priority is in issue.
Brewski
Beer Co. v. Brewski Brothers Inc., 47 USPQ2d 1281 (TTAB
1998); Cf. King Candy Company v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Respondent
began using its mark after the filing of its intent-to-use
application, so the earliest date on which it can rely is
the November 27, 2001 filing date of that application.
Petitioner can rely on the filing date of the applications
that matured into its various pleaded registrations that are
of record; with the exception of Registration No. 3022539
for SPAM for a screen saver, those dates precede, often by a
significant period of time, respondent’s constructive use
21
Cancellation No. 92042134
date.
Moreover, the evidence shows that petitioner began
using the mark SPAM for all of its registered goods prior to
the November 27, 2001 filing date of respondent’s
application.
There is been some discussion between the parties with
respect to petitioner's use of the mark for a screen saver.
According to the testimony of Kevin Jones, the mark was
first used in 1994 by an individual at Indiana University,
who created a screen saver of flying cans of SPAM and
requested permission from petitioner to use the design.
It
is not clear to us that the use at the university
constitutes actual trademark use of the mark SPAM for a
screen saver.
However, Mr. Jones testified that the screen
saver was available to be downloaded from the spam.com
website in the fall of 1997, when the website “first went
up.”
Test., p. 15.
Thus, petitioner has demonstrated its
priority with respect to the mark SPAM for the screen saver.
We recognize that the screen saver is available at no
charge, but it is not necessary to actually sell a product
in order to obtain trademark rights.24
In any event, as we
discuss infra in our analysis of the du Pont factor of the
24
In its brief respondent makes the comment that petitioner’s
registration for SPAM for screen savers is subject to
cancellation because “Hormel’s trademark claims relating to
screen savers are purely defensive, and constitute nothing more
than litigation strategy.” p. 33. Because respondent did not
bring a counterclaim to cancel petitioner’s registration, we give
no consideration to this attack.
22
Cancellation No. 92042134
relatedness of the goods, whether or not petitioner has
priority with respect to the mark for screen savers has no
effect on our decision herein.
Petitioner has also presented evidence of prior common
law use of SPAM for a wide variety of collateral merchandise
items, including mouse pads, in addition to those items for
which it has obtained registrations.
These goods are sold
primarily through petitioner’s online catalog, its toll free
telephone number, and its gift shop associated with the SPAM
Museum in Austin, MN.
In addition, petitioner has asserted a family of marks
based on the term SPAM, e.g., SPAMTASTIC, SPAMARAMA, SPAM
BURGER.
In order to demonstrate priority with respect to
this asserted family, petitioner must show that the family
was created, i.e., would have been recognized as a family,
prior to the November 27, 2001 filing date of the
application which resulted in issuance of respondent’s
registration.
In its answer respondent has admitted that
petitioner’s registered SPAM-derivative marks make up a
family of marks.
Paragraph 3.
In view of this admission,
we accept that petitioner has a family of marks consisting
at least of these registered marks, and also note that a
family may be expanded by the later inclusion of additional
23
Cancellation No. 92042134
marks.25
Petitioner’s catalog and fan club newsletters from
prior to 2001 include references to SPAM, SPAMTASTIC and
SPAM BURGER, and given respondent’s admission that
petitioner has used its registered SPAM-derivative marks as
a family, we find that petitioner has established prior use
of a family of SPAM marks.
Likelihood of confusion
The issue of likelihood of confusion is determined by
considering the factors set out in In re E.I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), for
which there is evidence of record.
However, this case
presents a very unusual situation in terms of that analysis.
Fame is one of the du Pont factors, and where fame is
present, it plays a major role.
Kenner Parker Toys Inc. v.
Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453
(Fed. Cir. 1992).
Here, it is undisputed that petitioner’s
trademark SPAM is a famous mark in terms of the likelihood
of confusion analysis.
At the same time, it is also
undisputed that “spam” is a recognized word, a generic term
for unsolicited commercial email, and that respondent uses
25
We note, however, that many of the so-called “marks” that
petitioner claims are not marks at all, but are merely terms used
in petitioner’s advertising or other promotional materials. See
The Amazing SPAM Joke Book, by Kevin Kestner, which petitioner’s
in-house counsel pointed to as an example of SPAM-derivative
marks which make up its family of marks. This book consists
primarily of joke riddles which use variations of “Spam” in the
answers, such as “Q: What is believed to be George Hormel’s
favorite breed of dog? A: The Cocker SPAMIEL.”
24
Cancellation No. 92042134
and has registered its mark SPAM ARREST for software that
blocks spam.
This dichotomy between the fame of
petitioner’s trademark and the generic meaning of that same
term must inform our analysis of the du Pont factors.
The first factor we consider is the similarity of the
marks.
Obviously, the word SPAM in respondent’s mark and
SPAM in petitioner’s mark is identical, and to that extent
the marks are similar in appearance and pronunciation.
However, when it comes to the meaning of the marks, they are
very different.
Although petitioner’s mark SPAM was derived
from “spiced ham,” it must be considered an invented word
rather than a suggestive term, and therefore it has no
meaning other than that of a trademark for petitioner’s
goods.
On the other hand, because “spam” is a generic term
for unsolicited commercial email, and applicant’s goods are
identified as “computer software, namely, software designed
to eliminate unsolicited commercial electronic mail,” as it
is used in respondent’s mark SPAM has the connotation of the
generic term, referring to unsolicited email, and the entire
mark has the connotation of software that stops or filters
spam/unsolicited commercial email.
Because of this
difference in connotation of “spam” in the respective marks,
the marks as a whole are different in connotation and
commercial impression.
Further, we consider these
differences to outweigh the similarities in appearance and
25
Cancellation No. 92042134
pronunciation resulting from the common element “spam.”
See
Champagne Louis Roederer S.A. v. Delicato Vineyards, 148
F.3d 1373, 47 USPQ2d 1459 (Fed. Cir. 1998) (CRYSTAL CREEK
for wine not likely to cause confusion with CRISTAL for
champagne); In re Sears, Roebuck and Co., 2 USPQ2d 1312
(TTAB 1987) (CROSS-OVER for bras not likely to cause
confusion with CROSSOVER for ladies’ sportswear); In re
British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) (PLAYERS for
men’s underwear not likely to cause confusion with PLAYERS
for shoes); In re Sydel Lingerie Co., Inc., 197 USPQ 629
(TTAB 1977) (BOTTOMS UP for ladies’ and children's underwear
not likely to cause confusion with BOTTOMS UP for men's
suits, coats and trousers).
Moreover, respondent’s mark SPAM ARREST differs from
petitioner’s family of SPAM marks for the same reasons,
i.e., the difference in meaning and commercial impression.
In addition, SPAM ARREST does not have the same overall look
as the members of petitioner’s family of SPAM marks.
Although petitioner claims that its family of marks consists
of the word SPAM followed by a second word, we disagree.
In
petitioner’s marks, SPAM is either followed by a generic
term, e.g., SPAMMOBILE, SPAM JAM, or it replaces a syllable
in a known word or phrase with “SPAM,” such as SPAMBURGER,
SPAMTASTIC.
This latter usage of SPAM is reinforced by the
use of such terms (as opposed to marks) in petitioner’s
26
Cancellation No. 92042134
advertising, recipes, and the like, e.g., SPAMPLES,
SPAMBASSADORS.
SPAM ARREST, on the other hand, would not be
viewed as a phrase in which SPAM has been substituted for
another term or phrase, nor is it followed by a generic
term.
Rather, as stated above, the word SPAM in SPAM ARREST
would be understood as the generic word “spam,” meaning
unsolicited commercial email, and ARREST would be seen as a
verb.
Thus, SPAM ARREST would not be perceived as being a
part of petitioner’s family of marks.
This du Pont factor favors respondent.
With respect to the factor of the similarity of the
goods and services, there are two points that we must
consider.
The first is the similarity of petitioner’s
computer products to respondent’s computer software.
Petitioner has shown prior common law use of SPAM for a
computer mouse and computer wallpaper, and common law use as
well as a registration for SPAM for “computer software,
namely, a screen saver.”
Petitioner also has pointed to
various gaming devices that employ computer software and
feature the SPAM mark.
The mere fact that respondent’s goods are a type of
computer software and petitioner’s goods can be used with
computers, or contain computer software, or even are a type
of computer software, is not a sufficient basis on which to
find these items related.
The mere fact that a term--
27
Cancellation No. 92042134
“computer” or even “computer software”--can be found to
describe the goods of the parties does not make them
similar.
See Harvey Hubbell Incorporated v. Tokyo Seimitsu
Co., Ltd., 188 USPQ 517, 520 (TTAB 1975) (“The mere fact
that the term ‘electronic’ can be used to describe any
product that includes an electronic device does not make a
television set similar to an electronic microscope, or an
electronic automotive ignition system similar to
telemetering devices.”)
See also, General Electric Company
v. Graham Magnetics Incorporated, 197 USPQ 690 (TTAB 1977);
In re Cotter and Company, 179 USPQ 828 (TTAB 1973).
Screen
saver computer software and computer software to filter
unsolicited commercial email are so different in their
nature and purpose that, without more, we cannot conclude
that consumers would assume that these goods are related.
Petitioner also uses its mark SPAM for a very wide
range of goods.
The evidence shows that SPAM is a
merchandising mark, and that consumers buy the disparate
items because they bear the trademark SPAM (or a variation
thereof, such as a picture of the SPAM can).
Lance Pogones
testified that “pretty much it seems anything we can put
SPAM on will sell.”
Test., p. 6.
As a result, consumers
are likely to view many very different items that bear the
mark SPAM as being related to petitioner’s luncheon meat.
28
Cancellation No. 92042134
However, when used in connection with computer software
to filter unsolicited commercial email, the word “spam”
would be viewed as having its generic meaning of unsolicited
email, and therefore such computer software would not be
viewed as a collateral product of petitioner’s.
As a
result, we cannot find respondent’s computer software that
is designed to eliminate unsolicited commercial electronic
mail as being related to petitioner’s various goods or
services, despite the broad range of collateral uses of its
mark.
As for the goods for which petitioner has obtained
registrations, we have considered them not only as
collateral goods, but as items in their own right, as they
are identified on the face of the registrations.
In either
category, petitioner has not demonstrated that consumers
will view these various items, e.g., apparel, pens, mugs,
jewelry, as related to computer software designed to
eliminate unsolicited commercial electronic mail.
Thus, in the case of the particular software at issue
herein, we find that respondent’s computer software is not
related to petitioner’s products or services.
The next du Pont factor we consider is the channels of
trade.
Respondent has made the point that it offers its
software through its own website and those of its
affiliates, but in determining likelihood of confusion we
29
Cancellation No. 92042134
must deem the goods to travel in all channels of trade that
are appropriate for such computer software.
This would
include computer stores, Internet websites, and mass
merchandisers such as Wal-Mart.
In addition to grocery
stores and the like, petitioner’s luncheon meat is also sold
at mass merchandisers, including Wal-Mart.
However,
although these items can be sold in a mass merchandise store
like Wal-Mart, there is no evidence that canned luncheon
meat and email filtering software is sold together, or that
people buying one item would come in contact with the other.
Neither party has discussed the potential channels of
trade for petitioner’s other goods that are the subject of
its registrations.
Thus, we have no evidence as to whether
these items would be sold in the same channels of trade;
certainly there is nothing to suggest that such items would
be sold in the same stores with the exception of mass
merchandisers that sell virtually everything.
However, as
with luncheon meat and email filtering software, we have no
basis on which to conclude that any of petitioner’s
identified goods would be displayed in proximity to software
of the type identified in respondent’s registration, or that
consumers for the various goods identified in petitioner’s
registrations would come in contact with such software.
As for those items for which petitioner has common law
rights, the channels of trade for these goods are primarily
30
Cancellation No. 92042134
limited to sales from petitioner’s catalog, its website, its
toll-free telephone number, and its museum gift shop.26
Respondent’s software is also offered through the Internet,
but we do not regard the fact that both parties’ goods are
offered through this medium as evidencing that they are sold
through the same channels of trade.
They are sold on
different websites, with petitioner’s collateral goods being
sold through its own website, while spam-filtering software
is not sold on this site.
The only evidence of petitioner’s goods and spam
filtering software being sold on the same website is Exhibit
195 to Jeffrey Grev’s testimony, which is the result of a
search for “spam” on the Sam’s Club website.27
26
This search
Mr. Pogones, whose company operates the Spam Museum gift shop,
testified that he also sold SPAM-licensed products “wholesale to
different retailers in places that resell SPAM stuff themselves,”
test., p. 15. However, the evidence regarding such sales is very
limited, and does not indicate the items sold nor the extent of
the sales. We have only the following testimony, pp. 15-16, from
Mr. Pogones:
I guess there is companies across the country, different
locations, Hawaii is really popular with SPAM, and there
is companies in Hawaii that call us and they can order on
a wholesale basis…. We sell the SPAM-branded merchandise
to them and they resell it in their stores. There is also
Mall of America, we sell a lot of SPAM stuff, too, there
is a place in Alaska, smaller retailers, different places
that resell it.”
This testimony is too vague for us to conclude that computer
software designed to eliminate unsolicited commercial electronic
mail and the unidentified SPAM-branded merchandise referred to in
Mr. Pogones’s testimony would be sold in the same stores.
27
A search for “spam” on the Wal-Mart website did not retrieve
petitioner’s meat product (Exhibit 194); the closest it came were
some cookbooks featuring SPAM meat as an ingredient and a
“biography” of SPAM; the same search on the Target website did
not retrieve petitioner’s meat product either, only the SPAM
cookbook. It did, however, retrieve some third-party use of SPAM
31
Cancellation No. 92042134
retrieved items of petitioner’s canned luncheon meat (which
indicated that they were available only for in-store pickup)
and software which filters spam.
The fact that a single
website, for what is in effect an on-line superstore or mass
merchandise store, offers both types of products is meager
evidence that consumers would encounter both, or that
luncheon meat and computer software for filtering spam are
normally offered in the same channels of trade.
Accordingly, we find that this du Pont factor does not
favor either party.
As for the conditions under which and buyers to whom
sales are made, both parties’ goods are consumer items.
All
of petitioner’s goods, whether its primary meat products or
its collateral items, are bought by the general public.
They include many inexpensive items which would not be
purchased with great care.
The consumers for respondent’s
product include anyone who uses email.
Such consumers must
be considered to include the general public, although they
may be considered somewhat more sophisticated in terms of
checking the nature of the product which they will load on
their computers.
Thus, to the extent that the class of
purchasers of both parties’ goods are the same and that they
are the public at large, this factor favors petitioner.
for a CD and DVD, namely, what appears to be a musical group
called the Spam Allstars.
32
Cancellation No. 92042134
However, to the extent that consumers of spam-filtering
software will be careful about the software that they
download or purchase for their computers, and will
understand the generic meaning of “spam” when they see it in
a mark for such software, this factor favors respondent.
This brings us to the fifth du Pont factor, that of the
fame of petitioner’s mark.
As noted previously, petitioner
has demonstrated, and respondent has acknowledged, that its
mark SPAM is famous for canned luncheon meat.
Even
dictionary definitions that are of record list “Spam” as “1.
Trademark.
A canned food product consisting esp. of pork
formed into a solid block,” Random House Webster’s College
Dictionary © 2001; “trademark used for a canned meat
product,”
© 2003.
Merriam-Webster’s Collegiate Dictionary, 11th ed.
It is because of the fame of this mark that
petitioner has successfully expanded its mark to use on
collateral products, i.e., has used it as a merchandising
mark by which consumers purchase other products because of
the very fact that SPAM is printed on them.
There is no
question that, as a famous and therefore strong mark, SPAM
is entitled to a broad scope of protection.
However, the
fame of the mark does not entitle petitioner to a monopoly
on the use of SPAM as a trademark for all goods and
services.
If the du Pont factor of fame were interpreted in
such a manner, owners of famous marks would essentially have
33
Cancellation No. 92042134
a right in gross in a term.
However, as the Court said in
The University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505, 507 (Fed.
Cir. 1983)):
The fame of the University's name is
insufficient in itself to establish
likelihood of confusion under § 2(d).
“Likely * * * to cause confusion” means
more than the likelihood that the public
will recall a famous mark on seeing the
same mark used by another. It must also
be established that there is a
reasonable basis for the public to
attribute the particular product or
service of another to the source of the
goods or services associated with the
famous mark. To hold otherwise would
result in recognizing a right in gross,
which is contrary to principles of
trademark law and to concepts embodied
in 15 USC § 1052(d).
Here, although there has been testimony, based on the survey
conducted by George Mantis, that consumers associate SPAM
ARREST with SPAM, at best that association is clearly of the
“brings to mind” variety, rather than evidence that
consumers believe that computer software designed to
eliminate unsolicited commercial electronic mail that is
sold under the mark SPAM ARREST emanates from or is
sponsored by petitioner.
The survey itself was not even
designed to determine whether there was a likelihood of
confusion between respondent’s mark and petitioner’s
mark(s); rather, its stated purpose was to assess “whether
the name ‘SPAM ARREST’ has attained secondary meaning and
34
Cancellation No. 92042134
whether it dilutes the distinctiveness of Hormel’s SPAM
trademark.”
Exhibit 1.28
Survey respondents were first
shown a card with the words “SPAM ARREST” and, below that
term, “Computer Software,” and asked whether “the product
shown on this card is put out by one company, more than one
company, no company, or don’t know.”
Only after follow-up
questions on the issue of “secondary meaning” were a second
series of questions put, i.e.:
Totally separate and apart from the
company that puts out this product, does
the name of this product bring to mind
any other products or brands?
If the answer was in the affirmative, respondents were then
asked:
What products or brands come to mind?
It is clear from these questions that the interpretation of
the survey results that is most favorable to petitioner29 is
that, for those interviewees who mentioned SPAM luncheon
meat, SPAM ARREST merely recalled petitioner’s mark and/or
product.
Thus, although the fame of petitioner’s mark certainly
favors petitioner herein, petitioner has not shown how that
28
Apparently the portion of the survey designed to assess
secondary meaning related to the originally pleaded ground that
respondent’s mark was merely descriptive or generic. That
ground, as noted previously, has been waived by petitioner, and
we make no comment as to the probative value of the survey as it
might relate to that ground.
29
We discuss, in our analysis of the dilution ground, other
problems with the survey.
35
Cancellation No. 92042134
fame has carried over to computer software designed to
eliminate unsolicited commercial electronic mail, or that
consumers would associate such software with the source of
petitioner’s SPAM and SPAM-derivative products and services.
In fact, as discussed below with respect to the du Pont
factor of the number and nature of similar marks in use on
similar goods or services, the evidence shows that
petitioner’s mark is not a strong mark for such goods.
Respondent has submitted evidence that numerous
products and services for the filtering of unsolicited
commercial email are offered under trademarks that include
the word SPAM.
At his testimony deposition respondent’s
founder and CEO, Brian Cartmell, identified printouts from
almost 100 websites using such trademarks.
The marks
include SPAM KILLER, SPAM STOP, SPAM BUTCHER, SPAM SLEUTH,
SPAM K O, SPAM GRIP and SPAM SHREDDER, and are for various
“solutions” to spam, which may be software or services or a
combination thereof.
Our analysis of this factor of third-
party use, and the evidence regarding it, is somewhat
different from the usual situation.
Frequently the Board
has given little weight to evidence of third-party use
without testimony regarding the extent of such use, because
we could not determine whether the public had been exposed
to the marks.
However, in the case of these computer
solutions, as opposed to what may be a local restaurant or a
36
Cancellation No. 92042134
product sold in a limited area, a normal channel of trade
for these goods and services is the Internet, and therefore
anyone with Internet access who is looking for a way to
block or filter spam may be exposed to the marks.
The
second “anomaly” regarding this factor is that normally
evidence that a term common to the marks at issue is
frequently used by third parties shows that a plaintiff’s
mark is weak and entitled to a limited scope of protection.
That is, because consumers have been exposed to multiple
uses of the element that is common to the parties’ marks,
they are more likely to be able distinguish the marks based
on relatively small differences.
Here, however,
petitioner’s trademark SPAM has been shown to be a famous
mark, and is obviously a strong mark in general.
What the
third-party use shows in this case is that, in the field of
email filtering/spam blocking solutions, the trademark SPAM
is not a strong mark because the term “spam” is used by so
many third parties for its generic meaning.
This du Pont
factor favors respondent.30
30
We recognize that petitioner has made efforts to police its
mark and has written cease and desist letters to many third
parties about their use of SPAM in their trademarks. While such
policing is commendable, and we are sympathetic to the fact that
petitioner’s resources do not permit it to take action against
every party that uses SPAM in its trademark, the fact remains
that in terms of public exposure, there are numerous marks in
this field that contain the word “spam,” and therefore
petitioner’s mark SPAM is not a strong mark with respect to such
goods and services.
37
Cancellation No. 92042134
We examine together the next du Pont factors, the
nature and extent of any actual confusion and the length of
time during and conditions under which there has been
concurrent use without evidence of actual confusion.
The
only arguable evidence of actual confusion consists of a
verbatim report taken by petitioner’s employees.
These
verbatim reports are prepared by petitioner’s consumer
affairs department, and can be reports of either telephone
conversations, emails or letters.
The particular “verbatim”
is on a report dated December 1, 2002 to December 15, 2003,
and reads in its entirety as follows:
Message: I do not understand how this
will stop my spam. Will you plese [sic]
stop my spam? Your other web site will
not work for me. I went to
http://www.spamarrest.com and they do
not even have live help. Where can I
stop this? Please stop it. Why do I
have to pay to stop spam? Please stop
it completely! Your food is good but
your advertising to stop it does not
have live help. Do you want me to wait
for help? This is so wrong. Carma
[sic] will get you.
Exhibit 193 to the testimony deposition of Nicholas Meyer.
Mr. Meyer could give no further information about this
message; he could not identify whether it came in by email,
phone or letter, or any information as to who wrote it, or
an address or telephone number.
Although he thought that
there might be more information on the message in the
consumer affairs department, including whether or not a
38
Cancellation No. 92042134
response was sent, the only information he had was the
exhibit itself.
We do not regard this message as evidencing an incident
of actual confusion.
Based on the limited information
petitioner has provided, we cannot even ascertain that it
was sent by a customer, or that it was a serious complaint
and not a joke.
There are just too many unknowns to give it
real probative value.
Thus, the factor of actual confusion
is neutral.
So, too, is the factor of the lack of actual confusion.
At the time of trial respondent had been operating for a
limited period of time.
Although respondent’s CEO testified
that millions of people have visited its website, these
visits are primarily so that the person can verify that the
email message it has sent to a customer of respondent’s is
not spam, and it is not clear to what extent the sender
actually examines the website, rather than merely typing in
a word to show that a computer is not the source of the
message.
As a result, there has not been sufficient
concurrent use without confusion for us to conclude that
this factor should favor respondent.
In terms of the du Pont factor of the variety of goods
on which a mark is or is not used, as we have said,
petitioner’s mark SPAM is not only a famous mark for its
luncheon meat, but is used as a merchandising mark on a wide
39
Cancellation No. 92042134
variety of products.
In this respect, this factor favors
petitioner.
The only other factor that has been discussed by the
parties is the extent to which [respondent] has a right to
exclude others from use of its mark on its goods.
Petitioner argues that, because it has prior rights in the
mark SPAM, petitioner can exclude respondent “from causing
confusion of its famous SPAM mark,” and therefore respondent
has no right to exclude others.
Brief, p. 42.
Respondent,
on the other hand, argues that because it has a registration
for its mark, it is entitled to exclude others from using
its mark or a confusingly similar mark in connection with
its identified goods.
As the factor is listed in the du
Pont decision, it refers to the extent that the applicant
has a right to exclude others, since du Pont was an ex parte
proceeding in which the applicant was seeking to register
its mark, and registration had been refused by the Office in
view of a previously registered mark.
The present
proceeding is a cancellation action, and therefore,
obviously, respondent owns a registration.
Although
registrations are entitled to the presumptions set forth in
Section 7(b) of the Statute, here the very purpose of this
proceeding is to cancel respondent’s registration.
In such
circumstances, respondent cannot simply rely on its
registration as prima facie evidence of the registrant’s
40
Cancellation No. 92042134
exclusive right to use the mark in commerce on the goods
identified in the registration, in the face of petitioner’s
evidence challenging that right.
This du Pont factor is
neutral.
After considering all of the du Pont factors on which
we have evidence or argument, we find that petitioner has
failed to prove that respondent’s mark SPAM ARREST for
“computer software, namely software designed to eliminate
unsolicited commercial electronic mail” is likely to cause
confusion with petitioner’s mark SPAM and its SPAMderivative marks for its various goods.
In particular,
because the word “spam” in respondent’s mark will be viewed
as having its generic meaning of unsolicited commercial
electronic mail, the marks as a whole are different in
connotation and commercial impression.
Differences in the
marks alone can be dispositive in finding no likelihood of
confusion.
See Kellogg Co. v. Pack’em Enterprises Inc., 951
F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991)
Here, as detailed
above, there are additional factors that favor a finding of
no likelihood of confusion.
While we have given great
weight to the fame of petitioner’s mark, that fame does not
extend to computer software for filtering spam.
Simply put,
the scope of protection of petitioner’s mark, while
extremely broad, does not extend to prevent the use of SPAM
ARREST for spam filtering software, since consumers will
41
Cancellation No. 92042134
understand SPAM as used in respondent’s mark in its generic
sense rather than as referring to petitioner’s mark(s).
Dilution
The second ground for cancellation is that of dilution.
As an initial matter, we note that respondent, relying on
Moseley v. V. Secret Catalogue, Inc., 537 US 418, 123 S.Ct.
1115, 65 USPQ2d 1801 (2003), has asserted that petitioner’s
claim must fail because petitioner never produced any
evidence of actual dilution.
However, the October 6, 2006
amendments to the Lanham Act, made after the Moseley
decision, make it clear that the standard to be applied in
ascertaining dilution is “likely to cause dilution,” not
“actual dilution.”
See Section 43(c) of the Trademark Act,
15 U.S.C. §1125(c):
Dilution by Blurring; Dilution by
Tarnishment.-(1) Injunctive relief.--Subject to the
principles of equity, the owner of
a famous mark that is distinctive,
inherently or through acquired
distinctiveness, shall be entitled
to an injunction against another
person who, at any time after the
owner's mark has become famous,
commences use of a mark or trade
name in commerce that is likely to
cause dilution by blurring or
dilution by tarnishment of the
famous mark, regardless of the
presence or absence of actual or
likely confusion, of competition,
or of actual economic injury.
(emphasis added)
42
Cancellation No. 92042134
Although this proceeding was tried and briefed prior to the
amendment of the Lanham Act, the standard applicable in TTAB
proceedings both prior to and after the amendment of the Act
was and is likelihood of dilution, whether or not the
defendant’s mark is in use.
NASDAQ Stock Market Inc. v.
Antartica S.r.l., 69 USPQ2d 1718, 1734 (TTAB 2003).31
Petitioner has asserted dilution by blurring and
dilution by tarnishment.
Because petitioner devotes more of
its argument to the former assertion, we will address that
first.
In order to succeed on a claim of dilution, a plaintiff
must prove that its mark is famous and distinctive.
Fame
for dilution purposes is different from fame for likelihood
of confusion.
Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1694 (Fed. Cir. 2005); Toro Co. v. ToroHead Inc., 61
USPQ2d 1164, 1170 (TTAB 2001).
Further, the plaintiff must
show that its mark became famous prior to the first use or
constructive first use of the defendant’s mark.
In the
present case, therefore, petitioner must establish that its
mark became famous prior to November 27, 2001, the filing
31
Although the NASDAQ decision held evidence of actual dilution
is not required in a Board case, respondent cites a Board
decision marked “not citable as precedent” as stating that the
NASDAQ decision did not address the question of whether actual
dilution must be demonstrated where the defendant’s mark is in
use, as it is here. Even so, that decision did not state that,
as respondent claims, actual dilution must be shown.
43
Cancellation No. 92042134
date of the intent-to-use application that resulted in
issuance of the registration that is the subject of this
proceeding.
As noted previously, respondent has admitted the fame
of petitioner’s mark only for purposes of the likelihood of
confusion analysis, and not for purposes of dilution.
However, we find based on the evidence of record that, prior
to 2001, petitioner’s mark SPAM had achieved the degree of
fame with respect to canned meat that is necessary for a
dilution claim.
At that point, petitioner had used the mark
for such goods for over 60 years; had achieved an extremely
large volume of sales that were still very high even in the
period shortly before respondent’s adoption of its mark; and
had engaged in significant promotion and advertising of its
mark throughout the entire period of its use.
In addition,
the various uses or mentions of petitioner’s mark and its
meat product, e.g., in the Smithsonian Museum, in a Library
of Congress display, on numerous television programs, all
demonstrate that the mark and product are recognized by the
public.
This recognition is also shown by the brand
awareness studies that petitioner made of record, showing an
extremely high “aided” brand awareness even among non-users
of petitioner's canned meat.
44
Cancellation No. 92042134
In addition to proving fame, petitioner must prove that
its mark is distinctive.
Toro Co. v. ToroHead Inc., supra.
As the Board stated, id. at 1177:
To be vulnerable to dilution, a mark
must be not only famous, but also so
distinctive that the public would
associate the term with the owner of the
famous mark even when it encounters the
term apart from the owner's goods or
services, i.e., devoid of its trademark
context. H.R. REP. No. 104-374, at 3
(1995) (“the mark signifies something
unique, singular, or particular”).
Also, courts have indicated that a mark
can be famous but not particularly
distinctive. See, e.g., Sporty's Farm
L.L.C. v. Sportsman's Market Inc., 202
F.3d 489, 497, 53 USPQ2d 1570, 1576 (2d
Cir. 2000) (“[E]ven a famous mark may
be so ordinary, or descriptive as to be
notable for its lack of
distinctiveness”); TCPIP Holding Co. v.
Haar Communications Inc., 244 F.3d 88,
96, 57 USPQ2d 1971, 1975 (2d Cir. 2001)
(footnote omitted) (“Some of the holders
of these inherently weak marks are huge
companies; as a function of their
commercial dominance their marks have
become famous. It seems unlikely that
Congress could have intended that the
holders of such non-distinctive marks
would be entitled to exclusivity for
them throughout all areas of commerce”).
Thus, in order to prove dilution, “the mark's owner must
demonstrate that the common or proper noun uses of the term
and third-party uses of the mark are now eclipsed by the
owner's use of the mark.
What was once a common noun, a
surname, a simple trademark, etc., is now a term the public
primarily associates with the famous mark.
To achieve this
level of fame and distinctiveness, the party must
45
Cancellation No. 92042134
demonstrate that the mark has become the principal meaning
of the word.”
Id. at 1180.
The evidence shows that “spam,” in addition to being
petitioner’s trademark, has a well-recognized meaning as a
generic term for unsolicited commercial email; the term is
used by consumers, the media, Congress, state legislatures
and those who sell solutions for such unwanted email.
Thus,
it does not have the requisite degree of distinctiveness to
support a finding of dilution, at least vis-à-vis
respondent’s use of the term as part of the mark SPAM ARREST
for computer software designed to eliminate unsolicited
commercial email.
Even petitioner’s expert witness Gregory
Carpenter, a professor in Northwestern University’s business
school, recognized that “a second meaning would diminish the
uniqueness” of the SPAM brand, test. p. 38, and the more
“spam” is used as a generic term, “the greater the impact on
the SPAM brand.”
p. 29.32
The situation we have here is somewhat analogous to
that in Hasbro Inc. v. Clue Computing Inc., 66 F. Supp.2d
117, 131, 52 USPQ2d 1402, 1413 (D. Mass. 1999), aff'd, 232
F.3d 1, 56 USPQ2d 1766 (1st Cir. 2000), in which “Clue” was
32
Mr. Carpenter also testified, based on the Mantis survey, that
such damage had not yet occurred to petitioner’s mark. In
particular, it appears from Mr. Carpenter’s testimony that he
viewed the results of the survey as being representative of or
projectible to all consumers. Because of the flaws in that
survey, as discussed infra, we give no probative value to the
conclusions Mr. Carpenter reached based solely on that survey.
46
Cancellation No. 92042134
found to be a common word with many meanings and the
“defendant's use of the word ‘clue’ is entirely consistent
with the common usage of the word.”
We acknowledge that, as
opposed to CLUE, which was a common word at the time the
plaintiff adopted it as a mark, here petitioner created the
trademark SPAM, and it became a generic word many years
later and after (and perhaps was adopted by others as a
generic term because of) the vast success it enjoyed as a
trademark for petitioner's canned meat.
However, although
it may be unfortunate for petitioner that its mark has
become a generic word for unsolicited commercial email, that
is what has happened.
As a result, SPAM is not a
distinctive mark of petitioner and its goods and services
when it is used in connection with email, or with goods or
services that deal with unsolicited commercial email.
In
other words, the fact that “spam” has become a generic term
for unsolicited commercial email is what diluted the
distinctiveness of petitioner’s mark, and this dilution
occurred prior to respondent’s adoption of the mark SPAM
ARREST.
In addressing the fact that “spam” is a generic term
(and presumably to differentiate the dilution caused by
generic usage of the mark versus purported dilution when
used in respondent’s trademark), petitioner has taken the
position that the use of “spam” is acceptable when it is
47
Cancellation No. 92042134
used as an ordinary generic term, but that it is not
acceptable when SPAM is used as part of a trademark.
Its
expert witness Gregory Carpenter testified that there is a
distinction between the use of “spam” as a generic term and
use in a commercial context, test. pp. 34-35:
As a word in the language, no
organization is actively seeking to
create associations surrounding that.
... So there’s no individual with an
economic incentive to promote a
particular word in the English language.
And so therefore, the associations--the
word will mean what it--what the public
comes to believe it ought to mean. But
it won’t--there won’t be another
commercial enterprise seeking to create
a set of associations that may interfere
or diminish the value of the Hormel
brand per se.
Although we understand the distinction that petitioner
is making, we do not believe that this is a significant
difference, or one that is drawn by the statute or the case
law.
If a term is generic, others should have the right to
use it, even as a disclaimed term in a trademark, to
describe the goods or services with which the mark is used.
And as we stated in our discussion of likelihood of
confusion, respondent is using the term "spam" in the mark
SPAM ARREST in its generic sense, and that is the meaning
that would be perceived by consumers.
This is not to suggest, however, that simply because a
mark has a generic meaning in other contexts it can never be
considered distinctive in terms of proving dilution.
48
We are
Cancellation No. 92042134
saying only that, when a trademark has an alternative
generic meaning, and it is being used in a second mark to
project that generic meaning, there can be no dilution of
the original mark under the statute because that mark is not
distinctive with respect to the goods which the generic term
describes.
This would be the case whether the trademark
owner invented a mark and the mark subsequently became a
generic term, as is the case here, or the trademark owner
chose an ordinary word that is arbitrary for its goods and
through its efforts caused the mark to become distinctive
for those goods.
In assessing petitioner's claim of dilution, we have
considered the survey conducted by The Mantis Group, Inc.,
and the testimony of George Mantis with respect to that
survey.
It is this evidence on which petitioner primarily
relies in asserting that respondent's mark will dilute
petitioner's mark.
The survey was a “mall intercept”
survey, in which people over the age of 18 found in eight
different shopping malls, two in each of the four census
regions of the country, were requested to participate.
In
order to qualify as a participant, an interviewee had to
answer that, in the past 60 days or within the next 60 days,
he or she had used or was likely to use the Internet to send
and receive e-mail and had purchased or was likely to
purchase a canned meat product, and had purchased or was
49
Cancellation No. 92042134
likely to purchase “computer software related to their use
of the Internet, such as software to protect their data or
filter E-mail.” Mantis test. exhibit 1.
Of the 159 people
questioned about SPAM ARREST, the Mantis report concluded
that 71 indicated in some way that SPAM ARREST brought to
mind petitioner’s product or trademark.
We note that more
than one fifth of the answers that were submitted as part of
this group mention, in addition to petitioner’s mark SPAM or
meat, various third-party trademarks, e.g., NetZero,
Microsoft and McAfee, or various other products or items,
including computer software, pop-ups, and email programs.
Thus, the Mantis report’s calculation that for 44.7% of
survey respondents SPAM ARREST brought to mind petitioner or
its meat product is not as impressive as it would appear
from the conclusion in the report.
Respondent submitted the testimony of its own expert
witness, Lea Knight, with respect to the validity of the
survey.
Her testimony shows what we have frequently seen
when we have a “battle of the experts”: no survey is
perfect.
Several of her comments really speak more to ways
the survey could have been improved, rather than indicating
major flaws, and some of her comments, while valid for a
marketing survey, do not take into account trademark
principles that must be applied by the Board.
50
However, we
Cancellation No. 92042134
find certain of her criticisms valid, and we have our own
additional concerns about the survey.
First, as Ms. Knight pointed out and as Mr. Mantis
recognized, a mall intercept survey does not use a random
sample of the population whose views are sought.
results of the survey are not projectible.
Thus, the
The survey
results tell us about the opinions of the people who
participated in the survey, but we cannot extrapolate from
them what the results would be if a survey could be taken of
everyone in the United States who fit the screening
criteria.
We acknowledge that mall intercept surveys are a
recognized survey technique, and that they have been
considered in trademark proceedings, but their value is
limited.
Here, where the number of respondents to the
dilution questions is quite small (159), the survey provides
limited information about consumer views.
Further, even the
people who were actually interviewed were not necessarily
representative of the people who were approached to
participate in the survey.
Although equal numbers of people
from each age group and gender and location were
“intercepted” in each of the malls, the vast majority of
them did not meet the screening criteria.
Thus, the number
of actual interviews could have been primarily from one mall
or from a single geographic region.
The survey report fails
to indicate the number of interviewees from each mall.
51
Nor
Cancellation No. 92042134
does the report indicate the day of the week or the time of
day that the interviews were conducted.
Obviously, these
factors have an impact on demographics.
Those who participated in the survey had purchased in
the preceding sixty days, or intended to purchase in the
next sixty days, both a canned meat product and “computer
software related to their use of the Internet, such as
software to protect their data or filter their E-mail.”
The
computer software identified in respondent’s registration
has a very specific, limited purpose--to eliminate
unsolicited commercial electronic mail.
The generic term
“spam” means “unsolicited commercial electronic mail,” and
the question of whether consumers would draw an association
between the mark SPAM ARREST and petitioner’s mark SPAM must
be determined in connection with this specific type of
computer software, not a general category of computer
software related to use of the Internet.33
Thus, it is not
clear that the participants in the survey constituted the
relevant group of purchasers.
We also have concerns about the questions in the
survey.
As noted in our discussion of fame with respect to
likelihood of confusion, the questions regarding dilution
were asked after questions whose purpose was to determine
33
As Ms. Knight noted, it is not clear how participants would
interpret “computer software related to their use of the
Internet.”
52
Cancellation No. 92042134
“secondary meaning” of the defendant's mark.
We cannot
ascertain whether these earlier questions had any effect on
the interviewees’ responses.
And we also are concerned with
the introduction to the question on dilution, i.e., “Totally
separate and apart from the company that puts out the
product....”
Mr. Mantis, during his discovery deposition,
explained that in order to do a survey on dilution, one must
test in the context of the defendant's product category, but
the introduction to the question on dilution might well have
been interpreted by the participants as a direction to
ignore the product category.
Aside from that problem, the
prompt that the survey respondents were shown, a card with
SPAM ARREST in all capital letters and “Computer Software”
below it, could have resulted in the respondents considering
all types of computer software, when “spam” has a generic
meaning only in connection with computer software for a
specific purpose.
“Computer software” is overly broad to be
used as a description of the product category for
respondent’s goods.
Petitioner itself has recognized,
quoting from Toro, supra at 1183, that "dilution by blurring
occurs 'when a substantial percentage of consumers, upon
seeing the junior party's use of a mark on its goods, are
immediately reminded of the famous mark and associate the
junior party's use with the owner of the famous mark....'"
Brief, p. 46 (emphasis added).
53
Using the descriptor
Cancellation No. 92042134
"computer software" does not adequately advise the survey
respondents what the junior party's goods are.
We also have a concern about whether consumers were
merely guessing or trying to come up with an answer to
please the interviewer.
At the beginning of the questions
relating to “secondary meaning,” the participants were told,
“In a moment I’m going to hand you a card which shows the
name of a product.
I will then ask you some questions.
For
each of my questions, if you don’t know or don’t have an
answer, please don’t guess.”
However, this caution was not
repeated at the point the interviewees were questioned about
dilution, and again, the introduction to the dilution
question, “Totally separate and apart from the company that
puts out this product...,” might well have been viewed as a
request to guess.
In this connection, we note that the
question on dilution, “Totally separate and apart from the
company that puts out this product, does the name of this
product bring to mind any other products or brands?,” did
not include “if any” or a similar phrase which would be
considered permission for the participant to say “no.”
In
contrast, the question on “secondary meaning” began with
such an indicator of permission to say no, i.e., “if you
have an opinion.”
As a result, participants may have simply
tried to come up with an answer to please the interviewer.
Certainly at least one of the responses indicates to us that
54
Cancellation No. 92042134
the interviewee was just guessing:
want to know.
The ham or Spam.
“(Hormel) What do you
Is that what you want to
See response No. 100.34
know.”
Most important to the question of whether dilution is
likely, the survey results do not tell us whether people
would reference petitioner’s mark and product any time they
saw “SPAM” alone or because respondent’s complete mark SPAM
ARREST causes such an association.
In this connection, Ms.
Knight pointed out that the survey did not control for this
factor--that is to say, it failed to take this possibility
out of the equation--and Mr. Mantis admitted as much during
his discovery deposition.
Mantis disc. p. 106.
The absence
of a control is of particular note since the survey did use
a control in the “secondary meaning” portion, and Mr. Mantis
has testified that a control is a way to eliminate “noise.”
At least two of the responses that petitioner has listed as
indicating dilution show that the interviewees, in answering
whether the name of the product brings to mind other
products or brands, were looking only to the word SPAM in
respondent’s mark, rather than to the mark itself.
Response
No. 104:
As far
“Other products as far as the name Spam.
as a meat product.
Arrest like an allergy product.”
34
The survey report did not include the actual filled-out
questionnaires, only typed answers that were grouped into tables.
We have reproduced the response as listed in the report,
including the punctuation provided in the table.
55
Cancellation No. 92042134
Response No. 84: “Yes, the spam part.”
Thus, the survey
responses purportedly indicating an association between
defendant's mark and “meat,” or petitioner, or petitioner's
mark, are equally consistent with the conclusion that it is
the generic word “spam,” and not respondent’s mark SPAM
ARREST, that creates the association with petitioner’s
trademark SPAM and its canned meat product.
This conclusion, that people make a connection between
spam email and petitioner’s mark and/or product, is
supported by the media references to petitioner’s mark in
articles about unsolicited email.
The record includes a
large number of articles, broadcast segments and the like
about unsolicited commercial email in which a can of
petitioner’s meat product is used as a visual illustration.
Petitioner acknowledges “the frequent use of the SPAM
trademark and SPAM product image by the public when
discussing the subject of unsolicited commercial email.”
Reply brief, p. 22.
Even federal legislation regarding
unsolicited email is named the CANSPAM Act.
Although
petitioner has written to various media protesting the use
of its product in these stories, the fact remains that there
has been public exposure connecting petitioner’s trademark
and product with unsolicited commercial email (spam).
In summary, we have so many concerns about the survey
that we accord it little probative value.
56
Further, to the
Cancellation No. 92042134
extent that the testimony of petitioner’s various expert
witnesses rely heavily on the results of the survey, that
testimony, too, has limited value.
Aside from failing to prove the distinctiveness of its
mark with respect to products and services relating to
unsolicited commercial email or spam, petitioner has failed
to prove that the involved marks are essentially the same.
As the Board stated in Toro, and as reiterated in Carefirst
of Maryland Inc. v. FirstHealth of the Carolinas Inc., 77
USPQ2d 1492, 1514 (TTAB 2005), aff’d 479 F.3d 825, 81 USPQ2d
1919 (Fed. Cir. 2007), to support an action for dilution by
blurring, the marks must be similar enough that a
significant segment of the target group would see the two
marks as essentially the same.
The connotation of SPAM in
respondent’s mark is unsolicited commercial email because it
is used in connection with a product that filters such
email.
Thus, respondent’s mark is different from
petitioner’s mark in connotation and commercial impression,
and therefore the marks are not essentially the same.
In view of the foregoing, we find that petitioner has
failed to prove either that petitioner's mark is distinctive
when consumers encounter the mark in the context of
unsolicited commercial email or products or services that
address this problem, or that respondent’s mark causes
dilution by blurring.
57
Cancellation No. 92042134
Petitioner also argues that respondent’s mark causes
dilution by tarnishment.
Petitioner bases this claim on a
few Internet postings that allege respondent engages in
sending spam emails and/or that its software is spyware, and
therefore the association of petitioner’s mark with
respondent’s software tarnishes petitioner’s mark.
The
postings on which petitioner relies cannot be used as proof
of the truth of the statements made therein.
Moreover, the
number of these negative postings is so limited (and some
have been retracted) that we cannot conclude that the public
regards respondent’s product as inferior or offensive.
In conclusion, we find that petitioner has failed to
prove dilution, whether by blurring or tarnishment.
Affirmative Defenses
In view of our finding that petitioner has failed to
prove its pleaded grounds of likelihood of confusion or
dilution, we need not reach respondent’s affirmative
defenses.
However, in the interest of rendering a complete
opinion, we discuss them briefly.
With respect to
respondent’s claim that “spam” is a generic term for
unsolicited commercial email, we have considered this claim
in our analysis of the grounds of likelihood of confusion
and dilution.
As for the affirmative defense of
acquiescence and estoppel, respondent bases this defense on
a position statement that appeared on petitioner’s website
58
Cancellation No. 92042134
at the time respondent filed its intent-to-use application
in November 2001.
This statement essentially said that “we
do not object to use of this slang term [spam] to describe
UCE [unsolicited commercial email], although we do object to
the use of our product image in association with that term.”
The evidence shows that respondent was not aware of
petitioner’s position at the time it filed its application,
and became aware of it only after June 13, 2002, when
respondent received a cease and desist letter from
petitioner.
As a general rule, the equitable defense of
acquiescence in an opposition or cancellation proceeding
does not begin to run until the mark is published for
opposition.
Krause v. Krause Publications Inc., 76 USPQ2d
1904 (TTAB 2005)
Cf. National Cable Television Association,
Inc. v. American Cinema Editors Inc., 937 F.2d 1572, 19
USPQ2d 1424 (Fed. Cir. 1991) [laches runs from the time from
which action could be taken against the trademark rights
inhering from registration].
Petitioner brought this cancellation proceeding on
May 5, 2003, approximately nine months after the publication
date of the underlying application on August 6, 2002, and
just one and one-half months after issuance of the
registration on March 25, 2003.
Moreover, petitioner
advised respondent of its objection to the use of SPAM
59
Cancellation No. 92042134
ARREST for its services in June 2002, shortly after
respondent’s application for SPAM ARREST for services was
published for opposition.
This relatively short period,
with respect to use of the mark for either the goods or
services, cannot be viewed as an unreasonable delay.
Moreover, although petitioner’s policy statement that
was on-line in 2001 did not specifically state that
petitioner objects to third parties using SPAM as a part of
their trademarks, as a later version of the statement does
make clear (“we do object to the use of the word ‘spam’ as a
trademark”), we do not read the 2001 statement as advising
third parties that petitioner does not have an objection to
the registration of such marks.
Moreover, it is clear that
respondent did not rely even on a mistaken interpretation of
this policy statement when it adopted its mark, since it was
not aware of the position statement until after its
application was filed, and after the March 2002 date that it
now asserts was the date of first use of its mark for its
goods.
Accordingly, if petitioner had demonstrated that it was
entitled to judgment on either its claim of likelihood of
confusion or its claim of dilution, we would find that proof
of either claim would not be barred by acquiescence.
60
Cancellation No. 92042134
Decision
Petitioner having failed to prove its pleaded grounds
of likelihood of confusion and dilution, the petition for
cancellation is dismissed.
Rogers, Administrative Trademark Judge, concurring:
I firmly agree with the assessment of the majority but
add a few observations about the Mantis survey.
As the Board stated in the Toro decision, for a famous
mark to be vulnerable to dilution, it must be "so
distinctive that the public would associate the term with
the owner of the famous mark even when it encounters the
term apart from the owner's goods or services, i.e., devoid
of its trademark context."
In the case at hand, the word
SPAM is devoid of its context as a trademark for plaintiff's
goods when it is instead "spam," i.e., the term for unwanted
commercial email.
Accordingly, the survey respondents
should have been qualified as understanding that "spam" is
unwanted commercial email.
Then the survey questions would
have ensured that respondents were individuals who
understood the word "spam" devoid of its context as a
trademark for plaintiff's goods.
In addition, not only did the Mantis survey fail to
ensure that respondents understood the term "spam" in its
61
Cancellation No. 92042134
generic context, but the conditions used to qualify
respondents could very well have qualified individuals who
were not purchasers, users, or prospective purchasers or
users of defendant's products.
This is because one could
qualify as a survey respondent if, within the prior or next
60 days, one (1) had or was likely to send and receive
email, (2) had purchased or was likely to purchase a canned
meat product, and (3) had purchased or was likely to
purchase software to protect data when using the Internet.
On this last point of qualification, the respondent only had
to have purchased or be likely to purchase software to
protect data or filter email.
And as the majority has
observed, the stimulus card did not refer to email filtering
software as the product associated with the mark SPAM
ARREST.
Finally, by requiring survey respondents to have
purchased or be likely to purchase a canned meat product,
the survey likely skewed the results to favor collection of
responses from individuals who would be more likely to draw
an association with plaintiff.
From the record it appears
that plaintiff's canned meat products must be preeminent in
their field.
Thus, any purchaser or prospective purchaser
of canned meat would be much more likely to be aware of
plaintiff than individuals who were not purchasers or
prospective purchasers of such products.
62
By ensuring a
Cancellation No. 92042134
group of survey respondents much more likely to be familiar
with plaintiff, the survey increased the likelihood of
associations with plaintiff among the respondents.
Plaintiff has conducted brand awareness surveys showing
awareness of its mark and/or products even among individuals
who do not purchase or use the products.
Evidence of an
association of the generic term "spam" with plaintiff among
survey respondents qualified as understanding the meaning of
the generic term and who were not purchasers or users of
plaintiff's products would have been powerful evidence; but
it was not the type of evidence provided in this case.
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